There are several sides of practicing trademark law. Often, we oversimplify and parse the practice into litigation and prosecution. I enjoy practicing in both areas because they complement each other. I can better advise my prosecution clients (e.g., clients looking to register their trademarks) if I know how a prosecution decision will improve the client’s enforcement efforts or potentially harm them in future litigation. Likewise, I am better suited to avoid a litigation strategy that might harm the client’s overall portfolio/prosecution strategy.

During the trademark application process, the United States Patent and Trademark Office (USPTO) regularly issues office actions. It is not uncommon for office actions to include likelihood of confusion refusals, which can pose significant challenges to obtaining a trademark registration. A likelihood of confusion refusal occurs when the USPTO determines that your applied-for-mark is confusingly similar to an existing registered or pending mark, potentially leading to confusion among consumers. In this blog post, we will share insights and strategies for effectively navigating likelihood of confusion refusals from the USPTO. As a result, you can increase your chances of overcoming the refusal and successfully registering your trademark.

As brand owners, wineries should keep their trademarks (e.g., name, logos, taglines, and other distinguishing source identifiers) top of mind. I enjoy representing several wineries with respect to their trademark rights. I help them register and protect those rights. Some of those wineries are a few miles away in the Texas Hill Country. Others are states, if not countries, away.

I enjoy a variety of wines. Decoy is one of them. Decoy is a notable wine brand that has gained recognition for its exceptional quality and distinct style. Produced by the renowned Duckhorn Wine Company, Decoy offers a range of premium wines that capture the essence of California's diverse wine regions.

In the competitive world of winemaking, establishing a strong brand is essential for success. One crucial element of brand protection is trademarks. Trademarks play a vital role in safeguarding a winery's identity, differentiating its products, and building consumer trust. This blog delves into the basics of trademarks and their importance for wineries. We will explore what trademarks are, their key components, the benefits of trademark registration, and practical tips for wineries to navigate the trademark landscape.

Trademarks fall on a spectrum with respect to their distinctiveness. On one end of the spectrum are generic terms. Generic terms do not have trademark significance. For example, a bag of salt that says “SALT” does not tell you where the salt came from. It simply tells you what is inside of the bag. On the other end of the spectrum are fanciful (i.e., made up) marks. KODAK, POLAROID, EXXON are examples of fanciful marks. Arbitrary marks are real words used in outside of their normal meaning (e.g., APPLE to identify computers, phone and other tech products that have nothing to do with produce and orchards). Descriptive trademarks merely describe some aspect of your goods or services without identifying or distinguishing the source of those goods or services. Over time, descriptive marks can serve as source identifiers. Lastly, there are suggestive marks, which are clever (e.g., COPPERTONE for sunscreen). Fanciful, arbitrary, and suggestive marks are inherently distinctive. Trademark examiners do not reject them on based on this quality.

Obtaining a registered trademark is important for businesses to protect their brand identity and gain exclusive rights. However, the trademark registration process often involves receiving non-final office actions from the United States Patent and Trademark Office (USPTO). These office actions indicate issues or deficiencies with the trademark application that must be addressed. By understanding the process and implementing the right strategies, you can overcome trademark office action challenges and increase your chances of registering your trademark.

Introduction: Trademark office actions are common in the trademark registration process. They are official communications from the United States Patent and Trademark Office (USPTO) and inform trademark applicants of any issues that must be addressed before a trademark can be registered. By understanding trademark office actions, applicants can confidently navigate the registration process and increase their chances of obtaining a registered trademark. In my experience, applicants receive office actions about three-fourths of the time.

Several outlets reported last week that Taco Bell filed Petitions to Cancel with the Trademark Trial & Appeal Board (“TTAB”) regarding registrations owned by Taco John’s (more accurately, Spicy Seasonings, LLC) and Gregory Hotel, Inc.

Sportico wrote last week that Chaos Lacrosse LLC (Chaos), "a club lacrosse program for youth and high-school players," recently sued the Premier Lacrosse League (PLL), which includes a team named Chaos Lacrosse Club, for trademark infringement.

Millions of people watched the Coronation of King Charles III this weekend. Although downplayed on television, one cannot help but think of countless tchotchkes and other merchandise made and sold in connection with the monumental event.

Music icon, Katy Perry, recently lost a decade-plus trademark battle with Australian fashion designer, Katie Perry. Per Business Insider, "Sydney-based Katie Perry filed the lawsuit in 2019 and claimed the pop singer disregarded her trademark by selling clothing merchandise on her Australian tours between 2014 and 2018, Reuters reported." https://www.businessinsider.com/katy-perry-loses-trademark-battle-with-designer-called-katie-perry-2023-4

The 2022 American League Most Valuable Player, Aaron Judge, recently prevailed in a trademark opposition proceeding at the USPTO. Judge has built an impressive resume during his eight major league seasons. In addition to MVP honors, he won the MLB Home Run Derby in his rookie season, top defensive and offensive awards, etc. After the 2022 season, he re-signed with the Yankees for a nine-year, $360 million contract and was subsequently named the team’s captain.

You may have heard that actors, Ryan Reynolds and Rob McElhenney, bought a Welsh Football club in 2020: Wrexham AFC. The owners, the town, and the club, are the subjects of a popular docuseries, Welcome to Wrexham.

One of the most valuable franchises in the NFL is the franchise from Washington D.C. Forbes reports the franchise's value at $5.6 billion. For many years, the team was known as the "Redskins." Rebranding took place after years of controversy and push back surrounding the name, which many people consider offensive, disparaging, and taboo.

Last week we discussed trademark fees at the USPTO. We focused our attention on application related fees, and fees associated with petitions and letters of protest. This week, we will consider post-registration, along with trial and appeal fees.

Trademark practitioners and trademark applicants alike incur government fees from time to time. In the United States, government fees related to trademarks are incurred with the United States Patent and Trademark Office (USPTO). The fee schedule is available here. I hope to clarify these fees in this post.

Last week, I discussed a lawsuit between Patagonia and Gap. The post focused on Patagonia’s theories and what Patagonia will need to show. This week, I want to focus on Gap’s side of the lawsuit, namely, defenses and counterclaims.

I recently learned that Patagonia sued Gap for trademark infringement late last year. The case is pending in the United States District Court for the Northern District of California. Patagonia’s suit includes several causes of action, including, infringement of its logos and product trade dress. There are several interesting issues in the case so far. I am going to split these issues into to posts: (1) Patagonia’s claims and what Patagonia will need to show; and (2) Gap’s defenses and counterclaim.

Wrestling Headlines reported this weekend that World Wrestling Entertainment, Inc. (“WWE”) recently filed applications for several trademarks with the USPTO, including: “Royal Rumble,” Elimination Chamber,” “Fatal-Four Way,” “WWE NXT,” “Jailhouse Street Fight,” and “Money In The Bank.” The article indicated that “[t]he only unknown term in that group is ‘Jailhouse Street Fight,’ which is most likely a new gimmick match.”